Or, How a Patent Attorney Should Not Work With an Inventor
This sad tale stems from the Federal Circuit decision earlier this week in Davis v. Brouse McDowell, L.P.A.
Heather Davis was the sole inventor of a website, search engine, and business known as IP-Exchange, a social networking platform targeted to IP professionals. In 2003, Ms. Davis contacted attorney Daniel Thomson requesting general information on patent protection, expressing particular interest in international protection. Mr. Thomson provided general information about the Patent Cooperation Treaty (PCT), but did not explain to her the absolute novelty requirement of many foreign countries.
Ms. Davis went live with the IP-Exchange website in 2005. On January 20, 2006, she filed two provisional patent applications at the PTO. She filed the applications pro se and they consisted of a few pages of what she considered the claims of her invention and some printouts. While the forms indicated that the Small Entity filing fee was $100, she paid only $80 for each. She also indicated that there were no inventors of the application.
In February 2006, the PTO mailed her a Notice to File Missing Parts requesting that she pay the deficiency in the filing fee as well as a surcharge due to the late fee payment or risk abandonment of the applications. Inexplicably, Ms. Davis did not respond to the Notice and the PTO mailed Notices of Abandonment in October 2006.
Apparently not being aware that the applications were abandoned, Ms. Davis contacted Mr. Thomson on January 17, 2007 (5 days prior to the deadline for claiming priority to the provisional applications due to January 20 being a Saturday) and asked if he could prepare corresponding US non-provisional and PCT applications to be filed by the January 22 deadline. The deadline for filing the PCT applications was the same as for the US non-provisional applications. Mr. Thomson agreed to prepare and file the applications by the deadline, but informed her that he was leaving the following day for vacation and would not return until Monday, January 22.
On January 18, Ms. Davis sent Mr. Thomson an e-mail that included the claims from the provisional applications. She indicated that she had 275 pages of additional material she wanted to provide, but was unable to do so until after Mr. Thomson left for his vacation.
When he returned on Monday, January 22, Mr. Thomson prepared and filed three non-provisional applications for Ms. Davis. He also prepared and filed petitions to revive the provisional applications so that priority could be properly claimed. He did not, however, file any PCT applications. The US applications were filed quickly due to the looming deadline, each contained only a single claim. Mr. Thomson said he planned to “go back and clean [them] up later.”
On the evening of January 22, Ms. Davis contacted Mr. Thomson regarding the status of the PCT applications. Mr. Thomson responded that he had not filed any PCT applications because they would not be worth the money since she would not be able to obtain patent protection in Europe, presumably due to the absolute novelty requirement. At her continued request, he did eventually file the PCT applications on January 25, 2007.
In March 2007, Mr. Thomson and his firm filed petitions to withdraw from representing Ms. Davis in her applications at the PTO. He had not gone back to “clean up” the applications. Presumably, the relationship had deteriorated. The applications received Office Actions on September 12, 2007, October 14, 2008, and July 29, 2009, respectively. The single claims in each application were rejected under §§ 101, 102, and/or 112. Rather than respond to the Office Actions, Ms. Davis permitted each application to become abandoned.
Ms. Davis sued Mr. Thomson and his firm for malpractice in January 2008 before any of the applications had been abandoned. She alleged malpractice in failing to timely file the PCT applications and “other omissions,” presumably relating to the filing of the US applications. She claimed that the failure to obtain patent protection resulted in her investors withdrawing funding from IP-Exchange and leaving her unable to operate the business. The District Court granted the attorneys’ motion for summary judgment and the Federal Circuit affirmed.
Federal Circuit Decision
The first question the court had to address was–why is this case at the Federal Circuit at all? Legal malpractice claims are typically state law claims to be resolved in state court. The court determined that a necessary element of the claim was, whether but for the defendants’ malpractice, she would have obtained a patent for her invention. This question relates to Federal patent law. Therefore, the case is properly in Federal court and appealed to the Federal Circuit. As a side note, the Federal Circuit rarely sees a case that it doesn’t want to hear.
The Federal Circuit agreed with the plaintiff that Mr. Thomson had breached a duty that he owed to Ms. Davis as her attorney.
Mr. Thomson went on vacation, missed filing dates, and, by his own admission, filed an application which he realized contained a poorly drafted specification and claims which he intended to repair at a later time. This is certainly not standard or adequate patent attorney representation, especially if, as Ms. Davis alleges, he did not inform her of his intention to proceed this way.
The Federal Circuit then addressed Ms. Davis’s expert’s conclusion that, but for the malpractice, she would have obtained patents for her inventions. The expert noted that he saw nothing in the defendants’ files or in the depositions that “would have blocked her ability to have secured commercially meaningful patents on her inventions.” The expert, however, provided no patentability analysis of the inventions under US or foreign law. Without a review of the prior art and US and foreign patent law, there is no adequate foundation for his opinion.
Mr. O’Shaughnessy’s opinion that Ms. Davis’s inventions are patentable is precisely this type of conclusory statement. His expert report contains no affirmative analysis supporting his opinion on patentability; instead, the opinion is followed only by the equally conclusory assertion that Mr. O’Shaughnessy has seen nothing to “block” this patentability. An unsupported opinion such as this cannot and does not create a genuine issue of material fact as to the patentability of Ms. Davis’s inventions.
Ms. Davis’s burden in the case was to demonstrate a likelihood that her inventions would have been patentable under US or foreign patent law. One way this could have been done would be for her expert to analyze the PTO Office Actions to discuss the references cited therein and the effect on patentability. This the expert did not do.
Lessons
So what are the lessons here? First, let’s remember that an inventor or client and a patent attorney should work together as a team. The relationship should be open and candid regarding facts and advice and not adversarial in nature.
What were Ms. Davis’s mistakes?
First, she called an attorney for general patent advice (presumably for free, although I don’t know this for certain), and then instead of following through with the attorney, she decided to take the cheap route and file her own provisional applications. It is doubtful that these applications would have provided her with adequate support for her later applications. Patents are too important for a business that relies on them to do it yourself. This is demonstrated by the fact that, without patent protection, her investors withdrew funding. Would she have performed surgery on herself if she needed it simply to save money?
Second, she ignored multiple notices from the PTO that if she did not respond to them her application would be abandoned. I don’t know all the facts and reasons for this, but it does not seem to make logical sense. Even after she sued Mr. Thomson, she could still have prosecuted her applications rather than letting them lapse.
Third, she didn’t give Mr. Thomson adequate time to prepare and file strong and well-written patent applications. She knew of the one year deadline; she should have approached Mr. Thomson in December at the latest to permit him sufficient time to prepare the applications. This either demonstrates a lack of understanding of the importance or what goes into preparing a good application or another attempt to be cheap.
What did Mr. Thomson do wrong?
First, he probably shouldn’t have provided general advice on patenting or PCT applications. Granted, all patent attorneys get calls for free advice. Often, we do give general advice on what is involved in patenting. We do this to be helpful and also in the hopes of obtaining a new client. Without knowing the specifics of the individual’s situation, however, giving such advice is done at the attorney’s peril. In this case, Ms. Davis was not informed of the absolute novelty requirement in many countries.
Second, he obviously should not have agreed to prepare and file her non-provisional applications. Again, all patent attorneys have filed quick applications when necessary to meet a deadline. It is simply not possible to make the application as good as one where the attorney has adequate time to prepare and review it. This case demonstrates the perils of agreeing to file an application in a very short amount of time.
In a situation like this, I simply won’t do it. I would have told Ms. Davis that I simply could not do an adequate job in five days. This is especially true if I am leaving for vacation. Add to this the fact that she wanted to send him 275 pages of material relating to the inventions. This is another red flag. How did she expect him to even read and digest all of that material in the short time period, much less then have time to prepare a good patent application and allow time for her review and comment?
By agreeing to undertake the representation, Mr. Thomson then had a duty to Ms. Davis to prepare and file adequate applications by the deadline. He could have done this by cancelling his vacation or by asking another member of his firm to perform the work. He did neither and thus breached his duty to Ms. Davis.
Third, rather than simply not filing the PCT applications, he needed to inform Ms. Davis that the absolute novelty bar was likely to prevent her from obtaining patent protection in many foreign countries such as in Europe. Since he had agreed to file PCT applications for her, he couldn’t simply ignore this fact and not do so. This was another breach of his duty to his client.
Although Mr. Thomson was exonerated by the courts, personally I am not interested in my name appearing in a Federal Circuit decision that includes the block quote above.
The attorney-client relationship must be one of teamwork. Attorneys should not promise what they cannot deliver and what they might have no intention of delivering. Clients and potential clients must give their attorneys adequate time and notice to perform the work that they desire and to provide adequate legal advice.
